WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Mujthaba Saeed, Maldives Exclusive

Case No. D2017-2349

1. The Parties

Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.

Respondent is Mujthaba Saeed, Maldives Exclusive of Addu City, Maldives.

2. The Domain Names and Registrar

The disputed domain names <mercuremaldiveskooddoo.net> and <pullmanmaldivesmaamutaaresort.net> are registered with Name.com, Inc. (Name.com LLC).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2017. On November 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2018. Respondent did not submit a timely response. Accordingly, the Center notified Respondent’s default on January 9, 2018. On January 30, 2018, Respondent sent an email communication to the Center which the Center forwarded to Complainant and the Panel.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on January 29, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of several trademark registrations for PULLMAN and MERCURE marks. The PULLMAN marks were first registered in 2013 (International trademark registration No. 1197984) and the MERCURE mark was first registered in 2003 (French trademark registration No. 3203352). The disputed domain names were registered on May 27, 2017. The disputed domain names lead to web pages that depict only the following:

“Welcome to nginx!

If you see this page, the nginx web server is successfully installed and working. Further configuration is required.

For online documentation and support please refer to nginx.org.

Commercial support is available at nginx.com.

Thank you for using nginx.”

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is “the world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services”, and that it operates more than 4,200 hotels, in 95 countries, with over 600,000 rooms, under more than 20 brands. Among Complainant’s brands are the PULLMAN brand, which encompasses 117 hotels worldwide, and the MERCURE brand, which encompasses at least 754 hotels worldwide. The Complaint further states that Complainant owns a MERCURE hotel in the Maldives on Kooddoo island, and has publicly announced its intention to open a PULLMAN hotel on Maamutaa island in 2018. Complainant sent Respondent a cease-and-desist letter on September 4, 2017, and through a series of emails, dated September 25, 2017 and October 23, 2017, Respondent responded “We have not been using any of the domains for business. Anyone can buy domain and keep it. If you want the domain from us you should buy it.”, “Only option is buy the domain”, and “Many people all buy the domains all over the world and simply they do not make any business with those domains. Even did the same and we have no intention to do such a business using those 2 domains”. Complainant also asserts that the disputed domain names have active email servers, and that “there might be a risk of phishing scheme, aiming to deceive Internet users to believe they were dealing with Complainant.” Complainant asserts that the disputed domain names are confusingly similar to Complainant’s registered PULLMAN and MERCURE trademarks as they reproduce entirely these trademarks, that Respondent has no rights or legitimate interests in respect of the disputed domain names, that Respondent is not affiliated with Complainant and is not authorized to use Complainant’s marks, that Respondent is not commonly known by the names PULLMAN or MERCURE, that Respondent could not have intended to develop a legitimate activity using the disputed domain names, and that Respondent has not made demonstrable preparations to use the disputed domain names. Complainant also asserts that the disputed domain names were registered and are being used in bad faith, that Respondent is in the same travel and tourism business and was aware of Complainant when Respondent registered the disputed domain names, that Respondent is not authorized to use Complainant’s marks and thus is not making a bona fide or legitimate use of the disputed domain names, that Respondent likely registered the disputed domain names to prevent Complainant from doing so, and that Respondent may be using the email servers associated with the disputed domain names for phishing.

B. Respondent

Respondent did not timely reply to Complainant’s contentions. However, after the Center notified the parties of the appointment of this Panel, Respondent sent an email on January 30, 2018 stating: “Hello, We have not use the domain for commercial purpose. And if wish to have the domain, we can sell it.”

6. Discussion and Findings

As an initial matter, pursuant to paragraph 12 of the Rules the Panel accepts Respondent’s late email as a Response to the Complaint. This email is consistent with the other communications from Respondent attached to the Complaint, and thus reinforces their content.

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain names are “identical or confusingly similar to a trademark or service mark in which Complainant has rights.”

Complainant has demonstrated that it has trademark registrations for the marks PULLMAN and MERCURE.

The disputed domain names consist of the PULLMAN and MERCURE marks, in each case followed by the country name Maldives, then in each case followed by what Complainant asserts is the name of an island within the Maldives, then in the case of <pullmanmaldivesmaamutaaresort.net> the generic term “resort” is added, and finally each of the disputed domain names uses the “.net” generic Top-Level Domain (“gTLD”).

Generally, “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”, WIPO Overview of Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The addition of the geographic descriptors and the “.net” gTLD, do not distinguish the disputed domain names from Complainant’s marks. See Accor v. Serdar Ceylan, WIPO Case No. D2011-2231 (“The mere addition of the geographic term ‘Istanbul’ is not sufficient to distinguish the disputed domain name from Complainant’s NOVOTEL trademark, as it is still confusingly similar […]. Moreover, a likelihood of confusion is given and could lead Internet users to think that the disputed domain name, in one way or another, is associated with Complainant’s trademark because there is a Novotel hotel which is operated by Complainant in Istanbul.”); L'Oreal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd, WIPO Case No. D2008-1640 (“Prior Panels have often not considered the addition of a geographical term to distinguish a domain name containing a trademark as a component of a domain name from the trademark”); WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

Where, as here, a term added to the mark relates to Complainant’s goods or services, the combination of the term with the mark can confirm confusing similarity. Six Continents Hotels, Inc. v. Mujthaba Saeed and Adam Farrar/HostGator, WIPO Case No. D2013-1866 (“The disputed domain name <holidayinnkanddomaresort.com> incorporates the registered trademark HOLIDAY INN in its entirety with the addition of the geographic descriptor ‘kanddoma’ and the generic term ‘resorts’. As held in previous UDRP decisions, the addition of a generic and descriptive term, such as ‘resorts’, may in some cases increase the risk of confusion.”).

Accordingly, the Panel finds that the disputed domain names are confusingly similar to trademarks in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name[s]”, paragraph 4(a)(ii) of the Policy. In accordance with paragraph 4(c) of the Policy:

“The following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

There is no evidence that Respondent was using the disputed domain names in connection with a bona fide offering of goods or services before receiving notice of this dispute. The disputed domain names lead to essentially empty websites, and Respondent’s emails claim that Respondent is not using the disputed domain names for business or commercial purposes. There also is no evidence that Respondent has been commonly known by <mercuremaldiveskooddoo.net> or <pullmanmaldivesmaamutaaresort.net>. There also is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. Rather, Complainant asserts that Respondent is not authorized to use Complainant’s marks and, given the reputation of Complainant’s marks, Complainant asserts Respondent could not have intended to develop a legitimate activity using the disputed domain names.

These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Hostmaster, WIPO Case No. D2010-0138 (“It is clear that no license or authorization of any kind has been provided by Complainant to Respondents to use any of its trademarks or to apply for or use any domain name incorporating those marks. […] Thus, it is clear that no bona fide or legitimate use of the domain names could be claimed by Respondents.”); Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (“No evidence was presented that at any time had Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.”).

Accordingly, the current state of the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”, Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.

Complainant asserts that it “is well-known throughout the world, including the Maldives, where the Respondent is established” and that Respondent “appears to provide travel and tourism services that specialize in travel to the Maldives, [a] field very much connected to the one of Complainant”. Accordingly, Complainant asserts that it is impossible for Respondent not to have been aware of Complainant’s MERCURE hotel on Kooddoo island and of Complainant’s publicized intention to open a PULLMAN hotel on Maamutaa island. Respondent has not attempted to rebut these allegations.

These facts and contentions support a finding of bad faith registration and use. See Six Continents Hotels, Inc. v. Mujthaba Saeed and Adam Farrar/HostGator, supra, (“From the evidence submitted by Complainant, it is clear that Complainant’s registered trademark HOLIDAY INN predates the registration dates of the disputed domain names <holidayinnkanddomaresort.com> and <holidayinnkandooma.biz>. The fact that the disputed domain names contain generic terms and geographic descriptors that closely correspond to Complainant’s HOLIDAY INN hotel in Kandooma indicates that Respondent had Complainant’s business in mind and was aware of Complainant’s trademark when registering the disputed domain names. In the absence of contrary evidence, the Panel finds that Respondent knew or should have known of Complainant’s trademark at the time when the disputed domain names were registered.”); LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494 (“This Panel agrees with previous Policy decisions to the effect that ‘knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith’. [….] Also, as indicated in another UDRP case, ‘it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products.”). See also Philip Morris USA Inc. v. Shara Gatrelle, The California Cannabis Connect, WIPO Case No. D2017-0470 (“Evidence that Respondent registered and is using the disputed domain names in bad faith arises from the fame of the MARLBORO and PHILIP MORRIS marks, that Respondent registered four such domain names within a short period of time, and that Respondent’s use of the disputed domain names has been limited to ‘coming-soon’ landing pages. Respondent could not reasonably claim to have been unaware of the rights Complainant holds in the MARLBORO and PHILIP MORRIS marks at the time Respondent registered and began using, or determined to postpone its use of, the disputed domain names.”); Philip Morris USA Inc. v. Malton Int’l Ltd., WIPO Case No. D2009-1263 (“Complainant has also proved [registration and use in bad faith]. The Panel has come to that view for the following reasons: […] the Respondent was obviously aware of Complainant and its Marlboro cigarettes when it registered the Domain Name. […] Without any authority from Complainant, the Respondent has incorporated Complainant’s mark in the Domain Name. […] [t]he Respondent’s failure to file any Response in this proceeding is consistent with the Panel’s conclusion that the Domain Name was registered, and has been used, in bad faith.”)

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain names have been registered and are being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <mercuremaldiveskooddoo.net> and <pullmanmaldivesmaamutaaresort.net> be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: February 11, 2018